Ex Parte Korevaar et al

Patent Trial and Appeal Board

Sep 30, 2016

11235555 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111235,555 0912612005
7590
General Electric Company
GEGR Patent Docket Rm.
Bldg. K-1Rm.4A59
One Research Circle
Niskayuna, NY 12309
09/30/2016
FIRST NAMED INVENTOR
Bastiaan Arie Korevaar
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
163855-1 4689
EXAMINER
RUDDOCK, ULA CORINNA
ART UNIT PAPER NUMBER
1729
MAILDATE DELIVERY MODE
09/30/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BASTIAAN ARIE KOREY AAR,
YUK-CHIU LAU, ANTENEH KEBBEDE,
HARISH RADHAKRISHNA ACHARY A, and
BADRI NARA YAN RAMAMURTHI
Appeal2015-002894
Application 11/235,555
Technology Center 1700
Before MARK NAGUMO, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-10 of Application 11/235,555
under 35 U.S.C. § 112, ,-i 1 as not enabled and under 35 U.S.C. § 112, ,-i 2 as
indefinite. Final Act. (January 16, 2014). The Examiner also finally
rejected claims 1-10, 28, and 29 under 35 U.S.C. § 103(a) as obvious. Id.
Appellants 1 seek reversal of these rejections with respect to claims 1-3, 5,
1 General Electric Company is identified as the real party in interest. Appeal
Br. 2.
Appeal2015-002894
Application 11/235,555
8-10, 28, and 29 pursuant to 35 U.S.C. § 134(a).2 Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
BACKGROUND
The '555 Application describes a solid oxide fuel cell (SOFC). Spec.
,-i 2. An SOFC has a porous anode and a porous cathode which are separated
by a porous solid electrolyte. Id. ,-i 3. In an SOFC, fuel reacts with oxygen
ions to produce electrons, water, and-in cases where the fuel includes
hydrocarbons-carbon monoxide and/or carbon dioxide. Id. ,-i 4. In the
cathode, oxygen reacts with electrons in the cathode surface to form oxygen
ions that diffuse through the electrolyte to the anode. Id. The electrons flow
from the anode through an external circuit to the cathode. Id. In many
cases, the cathode-electrolyte-anode components of an SOFC are formed by
positioning individual layers on top of each other. Id. ,-i 7.
Electrode porosity is an important property that affects SOFC
performance. Id. ,-i 6. Among other things, porosity controls the length of
the tri-phase boundary. Id. The tri-phase boundary is the interface of the
electrode with both the electrolyte and the gaseous fuel or oxidant and is the
site of charge transfer within the electrodes. Id. Thus, a larger tri-phase
boundary per unit volume of an electrode can result in greater power density.
Id.
2 Because Appellants have not appealed the rejection of claims 4, 6, and 7,
the rejections of these claims set forth in the Final Action are final and non-
appealable.
2
Appeal2015-002894
Application 11/235,555
Claim 1 is representative of the '555 Application's claims and is
reproduced below:
1. A solid oxide fuel cell, comprising:
(I) a porous anode, comprising a layer of finely-
dispersed nickel/stabilized-zirconia powder particles, wherein
the particles have an average diameter of less than about 300
nanometers; and wherein the layer of particles is further
characterized by a tri-phase length of greater than about
50 µm/µm 3;
(II) a porous cathode, spaced from the anode;
(III) an electrolyte, disposed between the anode and the
cathode; and
(IV) at least one interconnect structure, attached to at
least one of elements (I) or (II), and capable of accommodating
the flow of fuel and/or oxidant through the fuel cell.
Response to Notification of Non-Compliant Appeal Brief (Corrected Claims
App.) 2 (September 29, 2014).
REJECTIONS
On appeal, the Examiner maintains3 the following rejections:
1. Claims 1-3, 5, 8-10, 28, and 294 are rejected under 35 U.S.C.
§ 112, iJ 1 as failing to comply with the enablement requirement.
Answer 2.
3 Appellants have not appealed the Examiner's rejection of claims 4, 6, and
7. Appeal Br. 2. Our summary statements of the grounds of rejection on
appeal reflects Appellants' decision.
4 Neither the Final Action nor the Examiner's Answer includes claim 28 or
claim 29 in this rejection. Because these claims depend from claim 1 and
implicitly include the limitation that is allegedly not enabled, we assume that
3
Appeal2015-002894
Application 11/235,555
2. Claims 1-3, 5, 8-10, 28, and 295 are rejected under 35 U.S.C.
§ 112, iJ 2 as indefinite. Answer 3.
3. Claims 1, 8, 9, 28, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fasano6 and Jensen. 7
Answer 3.
4. Claims 2, 3, and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fasano, Jensen, and
Christiansen. 8 Answer 9.
5. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jensen. Answer 13.
DISCUSSION
Rejection 1. Claims 1-3, 5, 8-10, 28, and 29 are rejected as not
enabled. Final Act. 2-3. In particular, the Examiner concluded that
independent claims 1 and 8-10 are not enabled because each of these claims
recite a particular limitation regarding the "tri-phase length" of the particles
that comprise an SOFC anode. Id. at 2. In particular, the Examiner found
that the '555 Application's Specification does not describe how to determine
the tri-phase length of the particles. Id. The Examiner further found that the
the Examiner's failure to include these claims in the statement of the
rejection is an inadvertent oversight.
5 See note 4, supra.
6 US 6,051,329, issued April 18, 2000.
7 US 5,141,825, issued August 25, 1992.
8 US 2001/0012576 Al, published August 9, 2001.
4
Appeal2015-002894
Application 11/235,555
Specification incorporates by reference the contents of Costamagna9-a
non-patent publication-and "uses [Costamagna] ... to refer to the tri-phase
length. However, this reference does not teach one with ordinary skill in the
art how to determine the tri-phase length." Id. at 2-3. Based upon these
factual findings, the Examiner concluded that a person having ordinary skill
in the art would have to engage in undue experimentation to determine how
to calculate the tri-phase length of the layer of the particles. Id. at 3.
Appellants argue that this rejection should be reversed because the
'555 Application's Specification describes the tri-phase length limitation in
detail. Appeal Br. 5. Appellants further argue that Costamagna provides
good background for the calculation of tri-phase length and that "the
knowledge needed to perform such a calculation can be established by
reference to patents and publications .... " Id. (citing In re Lange, 644 F .2d
856 (CCP A 1981 )). Based upon these arguments, Appellants conclude that
"the Costamagna article, together with general knowledge known in the art,
clearly enables one to calculate the tri-phase length for any particle
dispersion that can be viewed through some sort of microscope, without
undue effort." Id. at 5-6.
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I.
du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984).
9 Paola Costamagna et al., Micro-modelling of Solid Oxide Fuel Cell
Electrodes, 43 Electrochimica Acta 375 (1998).
5
Appeal2015-002894
Application 11/235,555
Enablement is a question of law based upon underlying factual
determinations. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000).
The Examiner and Appellants disagree regarding the nature of the
technical field to which the invention pertains. Appellants' Specification
suggests that the person having ordinary skill in the art would have skill in
modeling and statistics. See Spec. iJ 54. The Examiner, however, found that
"a person of ordinary skill in the art would be one of a chemical engineer, a
material science engineer or a chemist[,] not someone with a background in
modeling and statistics." Answer 15 - 16. Based upon our review of the
Specification, we determine that the Examiner has correctly identified the
technical field of endeavor. In re Naquin, 398 F.2d 863, 866, 158 USPQ
317, 319 ( CCP A 1968) ("When an invention, in its different aspects,
involves distinct arts, that specification is adequate which enables the adepts
of each art, those who have the best chance of being enabled, to carry out the
aspect proper to their specialty."). Furthermore, Appellants' Specification
and the prior art of record lead us to find that the level of ordinary skill in the
art is high. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(Board did not err in adopting the approach that the level of skill in the art
was best determined by the references of record); Ex parte Jud, No. 2006-
1061, http://l.usa.gov/lJxVJMz (BPAI Jan. 30, 2007) (informative)
("Although neither the Examiner nor Appellants so state, we infer from
Appellants' Specification and the prior art that the level of skill in the art is
high.").
Having identified the technical field of endeavor which pertains to
Appellants' disclosure and claims, we now consider whether Appellants'
Specification contains an adequate disclosure to enable a person having
ordinary skill in the art at the time of the invention to make and use the
6
Appeal2015-002894
Application 11/235,555
claimed invention. In particular, we consider whether the Specification
would enable a person having ordinary skill in the art to determine the tri-
phase length of an anode using the methods described in the Specification.
Appellants' Specification defines the "tri-phase length" in ii 54. We
reproduce this paragraph below:
Moreover, the active anode can be further characterized
by a tri-phase length value, as a proportion of volume. The tri-
phase length value can be calculated, using well-known
statistical models. The value is defined herein as the length of
the tri-phase boundary between the Ni/stabilized zirconia
particles and the surrounding porous region, per unit volume. A
relevant discussion of this general type of modeling technique is
found in "Micro-Modelling of Solid Oxide Fuel Cell
Electrodes", by Paola Costamagna et al, Electrochimica Acta.,
Vol. 43, Nos. 3-4, pp. 375-394 (1998), the contents of which are
incorporated herein by reference. As an example, Equation No.
22 (page 383) of the reference can be used to calculate a tri-
phase area for particles which contact each other. As those of
ordinary skill in modeling and statistics understand, the tri-
phase area can be converted to tri-phase length by a scaling
factor. For example, if the spherical particles are viewed as
circles in two dimensions, the scaling factor could be calculated
as the ratio of the perimeter of the contacting circles, to their
area. In preferred embodiments, the tri-phase length should be
greater than about 50 µm/µm 3 (as measured after reduction of
the nickel oxide to nickel metal in the anode). In some
especially preferred embodiments the tri-phase length should be
greater than about 100 µm/µm 3.
Spec. ii 54 (emphasis added).
We begin by considering the proper treatment to be accorded the
Specification's citation to and incorporation of Costamagna. The Examiner
concluded that, in the absence of Costamagna, Appellants' specification
does not provide sufficient guidance regarding the determination of the tri-
phase length of the particles. Answer 14-15. The Examiner further
7
Appeal2015-002894
Application 11/235,555
determined that Appellants could not rely on Costamagna to enable the
rejected claims because Costamagna is not a US Patent or a US Patent
Application Publication.
The Examiner did not cite any authority for the proposition that
"[ e ]ssential material may be incorporated by reference, but only by way of
incorporation by reference to a U.S. Patent or U.S. Patent application
publication." See Answer 15. We assume that the Examiner is relying upon
37 C.F.R. § l.57(c) (2005), 10 which sets forth the prohibition relied upon by
the Examiner. This regulation defines "essential material" as including
material necessary to enable a person of skill in the art to make and use the
claimed invention. 37 C.F.R. § l.57(c)(l).
Our inquiry, however, does not end here. Costamagna is a technical
article published in a journal directed to chemists. As such, it is evidence of
both the State of the prior art and the level of skill in the art. Costamagna,
therefore, must be considered in reaching a conclusion regarding
enablement. In re vVands, 858 F.2d 731, 737 (Fed. Cir. 1988) (identifying
the state of the prior art and the level of skill in the art as factors to be
considered in determining whether a specification is enabling); see also
Lange, 644 F.2d at 863 (explaining that an application's disclosure must be
read in light of a person of ordinary skill in the art's knowledge, which can
be established by expert affidavits and by reference to patents and
publications available to the public prior to the application's filing date).
Costamagna demonstrates that that a chemist operating at the high
level of "ordinary" skill in the art would, in fact, understand modeling and
10 The '555 Application was filed in 2005.
8
Appeal2015-002894
Application 11/235,555
statistics. The '555 Application's Specification, therefore, is sufficiently
detailed to enable a person of skill in the art to understand how to determine
the "tri-phase length" of a particular particle dispersion.
In view of the foregoing, we determine that the Examiner erred by
concluding that independent claims 1, 8, 9, and 10 are not enabled by the
'555 Application's Specification. We, therefore, reverse this rejection.
Rejection 2. Claims 1-3, 5, 8-10, 28 and 29 are rejected as
indefinite. Final Act. 3. In particular, the Examiner concluded that the
claim term "tri-phase length," which appears in each of the independent
claims, is indefinite and stated in units that are not recognized by a person
having ordinary skill in the art. Id.
We reverse. Paragraph 54 of the '555 Application's Specification
states that "[t]he [tri-phase length] value is defined herein as the length of
the tri-phase boundary between the Ni/stabilized zirconia particles in the
surrounding porous region, per unit volume." The Specification also states
that the tri-phase boundary "can be defined as the interface at which the
electronically/ionically conductive electrodes meet both the electrolyte and
the gaseous fuel/oxidant." Spec. ,-i 6. In view of these definitions, which the
Examiner appears to have overlooked or misapprehended, the Examiner
erred by concluding that the '555 Application's independent claims fail to
meet threshold requirements of clarity and precision. See In re Skvorecz,
580 F.3d 1262, 1268 (Fed. Cir. 2009).
Rejection 3. The Examiner rejected claimsl, 8, 9, 28, and 29 as
unpatentable over the combination of Fasano and Jensen. Final Act. 4-9.
Appellants argue for reversal of the rejection of these claims as a
group. See Appeal Br. 7-8. Accordingly, we restrict our discussion to
independent claims 1, 8, and 9. Claims 28 and 29 will stand or fall with
9
Appeal2015-002894
Application 11/235,555
claim 1, from which they depend. 37 C.F.R. § 41.37(c)(l)(iv). Furthermore,
because the particular claim limitation which forms the basis for Appellants'
argument appears in substantially the same form in each of the independent
claims subject to this rejection, we shall confine our discussion to claim 1,
with the understanding that it applies with equal force to independent claims
8 and 9.
Appellants argue that the rejection of claim 1 should be reversed
because neither Fasano nor Jensen describe or suggest an SOFC comprising
a porous anode "comprising a layer of finely-dispersed nickel/stabilized-
zirconia powder particles," as recited in claim 1. See Appeal Br. 7-8.
In rejecting claim 1, the Examiner found that Fasano does not teach an
anode comprising a layer of finely-dispersed nickel/stabilized-zirconia
powder particles wherein the particles have an average diameter of less than
about 300 nm. Final Act. 4. The Examiner, however, found that Jensen
describes an SOFC comprising "a porous anode layer that has metallic
nickel, ytrria stabilized zirconia particles that are in a mixture that has a
particle size in the range of up to 3 micrometers, preferably 0.25-3
micrometers [250-3000 nm]." Id. Because the range described in Jensen
overlaps the claimed range (less than about 300 nm), the Examiner
concluded that the claimed range was prima facie obvious. Id. The
Examiner also found that the claimed tri-phase length "is an intrinsic
property of the nickel/zirconia powder particles. It is inherent that the
nickel-zirconia mixture will have the claimed tri-phase length of greater than
about 50 µm/µm3." Id. at 5.
We reverse because the Examiner erred in finding that Jensen
describes an SOFC comprising a nickel/stabilized-zirconia powder particles
dispersion with an average diameter of less than about 300 nm. In fact,
10
Appeal2015-002894
Application 11/235,555
Jensen describes a nickel/ stabilized zirconia powder particles dispersion
comprising 90 - 99 weight % nickel powder and 1 - 10 weight % stabilized
zirconia powder. Jensen col. 5, 11. 18 - 30. While the stabilized zirconia
powder has a particle size range of up to 3 µm preferably 0.25 - 3 µm, id. at
col. 5, 11. 31 - 34, the nickel powder is comprised of roughly spherical
particles having 3 - 7 µm diameters, id. at col. 5, 11. 59 - 62.
Based upon this disclosure, the smallest possible average diameter of
the particles in the nickel/stabilized-zirconia powder particles dispersion is
greater than 2700 nm. 11 Thus, Jensen does not describe or suggest the
claimed nickel/stabilized zirconia powder particles dispersion.
In view of the foregoing, we reverse the rejection of claims 1, 8, 9, 28,
and 29 as unpatentable over the combination of Fasano and Jensen.
Rejection 4. The Examiner rejected claims 2 and 3 as unpatentable
over the combination of Fasano, Jensen, and Christiansen. Final Act. 9.
Claims 2 and 3 depend from claim 1. For the reasons set forth above,
we have reversed the rejection of claim 1. In rejecting claims 2 and 3, the
Examiner relied upon Christiansen for its description of the porosity range of
the anode. See Final Act. 9 - 10. Thus, the Examiner did not find that
11 Assume a mixture of 90% nickel particles and 10% stabilized zirconia
particles. Further assume that all of the nickel particles have a diameter of
3 µm (3000 nm) and that all of the stabilized zirconia particles have a
diameter of 0.25 µm (250 nm). With these assumptions, the number average
diameter of the particles in the dispersion is:
0.9(3000 nm) + 0.1(250 nm) = 2725 nm
Based upon Jensen's disclosure, the size of the stabilized zirconia
particles could be less than 250 nm. As the diameter of these particles
approaches zero, the average diameter of the particles in the dispersion
approaches 2700 nm.
11
Appeal2015-002894
Application 11/235,555
Christiansen describes or suggests an anode with the claimed average
particle size range. We, therefore, reverse the rejection of claims 2 and 3 for
the same reason that we reversed the rejection of claim 1.
Rejection 5. The Examiner rejected claim 10 as unpatentable over
Jensen. Final Act. 13. Claim 10 is reproduced below:
10. A porous anode for a fuel cell, comprising a layer of
finely dispersed nickel/stabilized-zirconia powder particles,
wherein the particles have an average diameter of less than
about 300 nanometers; and wherein the layer of particles is
further characterized by a tri-phase length of greater than about
50 µm/µm 3.
Corrected Claims App. 4.
As discussed above, the Examiner erred by finding that Jensen
describes or suggests a dispersion of nickel/stabilized-zirconia powder
particles having an average diameter of less than about 300 nm. We,
therefore, reverse the rejection of claim 10.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-3,
5, 8-10, 28, and 29 as not enabled. We also reverse the rejection of claims
1-3, 5, 8-10, 28, and 29 as indefinite. Furthermore, we reverse the rejection
of claims 1-3, 5, 8-10, 28, and 29 pursuant to§ 103.
REVERSED
12